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2.1 In the UK a trade mark must be registered, and the responsible authority within the United Kingdom is the UK Intellectual Property Office.[1] As stipulated under the 1994 Act[2] a registered trade mark is a right in property, and thereby provides the owner of that trade mark the rights and remedies contained under the 1994 Act.

2.2 The registration of a trade mark can be refused however, as stipulated under the 1994 Act. There exist absolute[3] and relative[4] grounds for refusal of registration. The absolute refusal may stem from the non-conformity of the requirements set out in s. 1 (1) of the 1994 Act, the lack of distinctive character and more reasons contained in Part I of the act. Relative grounds of refusal include the similarity that the non-registrable trade mark may share with an already existing trade mark.

Common law development

3.1 The tort of passing off has been well established through case law to protect the goodwill of traders, which is illustrated in the case of Consorzio del Prosciutto di Parma v Marks & Spencer[5] as detailed by Lord Oliver, there are three requirements to be met in a passing-off case to succeed, namely – (1) establish a goodwill or reputation attached to the goods or services; (2) demonstrate a misrepresentation by the defendant tothe public; (3) demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation.[6] The case of Francis Day[7] contains within it a concise and clear statement of an overall indicator for a passing-off case – “The thing said to be passed off must resemble the thing for which it is passed off.” This serves as an indicator that similarity is a basic requirement between trade marks in a passing-off case and the case also implies the factor of consumer confusion on a large scale.

3.2 Recently however the boundaries of this common law concept have been broadened as found in the case Cadbury-Schweppes v Pub Squash[8] wherein the confusion arising from an alleged similarity of trade marks had been “more than momentary and inconsequential.” Furthermore, initial interest confusion[9] has now also been found to being able to constitute passing-off, as indicated by the case of Och-Ziff v Och Capital.[10]

[9] Initial interest confusion – allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase. Definition provided by the International Trademark Association <http://www.inta.org/Advocacy/Pages/InitialInterestConfusion.aspx > Accessed: 27 March 2017